Complainant is Recaro North America, Inc. of Auburn Hills, Michigan, United States of America (U.S.), represented by Black Lowe & Graham PLLC, U.S.
Respondent is Speedware Motorsports of Redmond, Washington and Laredo, Texas, U.S., represented by Lane Powell, P.C., U.S.
The disputed domain name <recarobabyseats.com> is registered with GoDaddy.com, Inc. The disputed domain names <recarochildseats.com> and <recaronorthamerica.com> are registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2010. On March 18, 2010, the Center transmitted by email to GoDaddy.com, Inc. and Tucows Inc. a request for registrar verification in connection with the disputed domain names. On March 18, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 19, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 25, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2010. The Response was filed with the Center on April 14, 2010.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 26, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant Recaro North America, Inc. is a Michigan corporation and is a sub-licensee of Recaro Beteiligungs-GmbH headquartered in Germany, with rights to the RECARO trademark in the U.S. Complainant is in the business of developing, manufacturing and distributing seating for various applications, including vehicle seating and child passenger safety seats. RECARO goods are used not only for automobile seating but also for aircraft, boating and stadium seating.
The RECARO mark is registered throughout the European Union and in the U.S. with the United States Patent and Trademark Office, as follows:
- United States Reg. No. 1,717,889 with a date of first use in commerce in 1969 for interior furnishings for motorcars, in particular seats, headrests, safety belts, safety upholstery, plastically deformable parts for safety purposes, shock absorbers for safety belts for seats and for headrests and fittings for the same in International Class 012; and
- United States Reg. No. 2,484,706 with a date of first use in commerce in 1985 for electric, hydraulic or pneumatic motors for positioning aircraft seats and their components in International Class 07 and for aircraft seats and their components, sold together as a unit, namely, ball bearings and mountings for aircraft seats, upholstery and seat coverings, headrests, gearings for arms and legs in International Class 012.
In addition to U.S. federal rights, Complainant has common law trademark rights in the RECARO mark, which has been used in commerce since as early as 1969.
Complainant's primary Internet website is located at “www.recaro.com”.
Respondent Speedware Motorsports, LLC is a Washington state corporation that distributes automotive child and aftermarket seats for Complainant. Respondent registered the disputed domain names on the following dates:
- <recarochildseats.com> registered on July 8, 2004
- <recarobabyseats.com> registered on September 25, 2004
- <recaronorthamerica.com> registered on February 14, 2006.
On August 1, 2004, Complainant and Respondent executed a non-exclusive Authorized Distributor Agreement, which provides in part that: “Distributor shall not use or register any Internet domain name containing any RECARO trademark, trade name, or brand”.
On September 4, 2009, Complainant notified Respondent that: “Speedware is currently in violation twice of Section 3 of their Authorized Distributor Agreement. Speedware continues to sell product through the domain recarochildseats.com without authorization from RECARO.”
On that same day, Respondent answered: “If you would like to purchase the site and contents of it, we would be willing to release it to you and all of our interest in it for $1,500,000.00 USD. Please feel free to contact me if you want to proceed.”
Complainant claims that the RECARO mark has become famous as a distinctive identifier associated with Complainant and its goods. Since as early as 1969, the RECARO mark has been widely promoted among members of the general consuming public world-wide and Complainant has spent over USD 250 million on sales and marketing of RECARO goods.
Complainant states that Respondent has incorporated Complainant's RECARO mark as the distinctive part of the disputed domain names, adding only the descriptive words “childseats” and “babyseats,” respectively, to the <recarochildseats.com> and <recarobabyseats.com> domains. In addition, the <recaronorthamerica.com> domain name incorporates the RECARO mark and refers to the name of Complainant's North American operations. Complainant maintains that because its RECARO mark and the distinctive part of the disputed domain names are identical, the domain names are confusingly similar to the RECARO mark. Moreover, due to similarity between the RECARO mark and the disputed domain names, the domain names are likely to cause confusion and mistake, and to deceive as to the affiliation, connection, or association of Respondent with Complainant.
Complainant contends that Respondent's rights associated with its authorization to sell certain Complainant goods do not include the right to use the RECARO mark in a domain name. Specifically, the Authorized Distributor Agreement between Complainant and Respondent provides that “Distributor shall not use or register any Internet domain name containing any RECARO trademark, trade name, or brand…” This prohibition allows Complainant to control use of its mark, notwithstanding any license it may grant to a party to use its marks to sell its goods. Moreover, Complainant explains that Respondent has never acquired any trademark rights in the disputed domain names. Respondent has a limited license to use Complainant's marks solely for the purpose of selling Complainant's goods pursuant to the terms of the Authorized Distributor Agreement. Accordingly, Respondent cannot rely upon the Authorized Distributor Agreement to demonstrate any legitimate rights in the disputed domain names.
Respondent did register the <recarochildseats.com> domain name before the conclusion of the Authorized Distributor Agreement between Complainant and Respondent. However, this disputed domain name registration did not provide Respondent with any rights in the RECARO mark. The website at <recarochildseats.com> resolves to the homepage with content that implies that Complainant has authorized the website and that Respondent is an exclusive licensee of Complainant's line of child seats. The metatags on the home page of the website list “recarochildseats” and “recaro.” This offending use of the disputed domain name and website was never authorized by Complainant via a license or otherwise. Respondent is not an exclusive licensee of Complainant for any of Complainant's goods.
Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain, but is instead misleading consumers as to the exact relationship between Complainant and Respondent and in fact is trading on and gaining financial benefit while using the RECARO mark in a manner not authorized by Complainant. For these reasons, Complainant concludes Respondent has no rights or legitimate interests in respect to the disputed domain names.
With respect to bad faith, Complainant argues that Respondent was never authorized to register the disputed domain names. Instead, the clear language in the Authorized Distributor Agreement between Complainant and Respondent made clear that Respondent was not to register any domain with the RECARO mark. However, with knowledge of this prohibition, and in bad faith, Respondent registered the <recarobabyseats.com> and <recaronorthamerica.com> domain names in direct contravention of this expressed and agreed to prohibition.
With regard to <recarochildseats.com>, Respondent registered this domain name before it entered into the Authorized Distributor Agreement. However, Complainant maintains that registration of a domain name incorporating a trademark of one of the parties discussing a potential relationship is evidence of a bad faith registration. Moreover, Complainant urges that Respondent attempted to sell the <recarochildseats.com> domain to Complainant for USD 1,500,000. Noting that the average cost of registering and maintaining a domain name is less than USD 50 per year, it is clear that Respondent attempted to sell this domain name for an amount well in excess of out-of-pocket costs. Respondent has claimed that it had written authorization to register and use the disputed domain names, but in response to Complainant's demands has failed to provide documentation in support of this assertion.
Complainant states that with regard to the <recaronorthamerica.com> and <recarobabyseats.com> domain names, in each instance Respondent has parked the domains. A parked website provides income to the domain owner through a “pay-per-click” revenue system. Such use is not a legitimate or bona fide use of a domain name. Additionally, in each instance advertising links on the parking page provide links to goods competitive with Complainant's products. The use of a parking page with links to a competitor of a legitimate trademark holder is indicative of bad faith.
Finally, Complainant asserts the conclusion is unavoidable that Respondent registered the disputed domain name <recarochildseats.com> with bad faith as at the time of the registration it was aware of Complainant's RECARO mark and was not authorized to register the disputed domain name. Furthermore, Respondent in direct contravention of an agreement not to register any domain names with the RECARO mark did register in bad faith <recarobabyseats.com> and <recaronorthamerica.com>. In each instance, Respondent sought to impermissibly use and exploit Complainant's mark by using the mark in an unauthorized domain name.
Respondent states that it is the largest U.S. distributor and number one dealer of Complainant's products in the U.S. for the last 16 years. Respondent maintains that it has not improperly or unlawfully used any domain names relating to Complainant. Respondent denies that it has any ownership or other interest in the <recaronorthamerica.com> domain name. With regard to the <recarobabyseats.com> domain name, Respondent alleges that it secured this domain name solely at the request, and with the knowledge, of Complainant as another domain name option. According to Respondent, this domain name is currently not being used and thus, for purposes of this dispute, is not relevant, thereby leaving <recarochildseats.com> as the only disputed domain name.
Respondent contends that it registered the <recarochildseats.com> domain name and created an accompanying website at great expense, with both the express and implied authorization and approval of Complainant. Respondent states that Complainant provided Respondent with some of the materials used on the website. Moreover, Complainant regularly reviewed, requested revisions, approved and complimented Respondent on the content of the website. Respondent states that it has used the <recarochildseats.com> domain name and distributed Complainant's products through the associated website for the past nearly five years, while Complainant has accepted payments from Respondent for sales of Complainant's products through the website.
Respondent claims there can be no consumer confusion associated with Respondent's use of the <recarochildseats.com> domain name because Respondent has used it to sell Complainant's products while Complainant has repeatedly reaped the benefits thereof. The associated website contained two separate sections describing the business relationship between Respondent and Complainant. One section provides “[w]e were singled out by the Recaro North America office to be the North American Center for the growing line of Recaro Child Seats.” Respondent contends that the language on the website makes it clear that Respondent distributes Complainant's products on behalf of Complainant.
Regarding rights or legitimate interests in the <recarochildseats.com> domain name, Respondent claims that it has both rights and legitimate interests with respect to it. Respondent refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.3 to contend that:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
Respondent claims that its use of the <recarochildseats.com> domain name fits squarely within these requirements as this disputed domain name and corresponding website were selected and created with the knowledge and authorization of Complainant; Respondent uses this domain name to sell Complainant's products; and Respondent has clearly stated its relationship as an authorized distributor of Complainant. Finally, both Complainant and other distributors own other domain names that include Complainant's mark and thus, Respondent has not attempted to corner the market with respect to Complainant's domain names. Respondent asserts that Complainant's allegations that Respondent registered this domain name without implied or express authorization are false and disingenuous. Moreover, Respondent emphasizes that Complainant admits that the <recarochildseats.com> domain was registered by Respondent before entering into the Authorized Distributor Agreement. Respondent argues that Complainant cannot in hindsight revoke its authorization and demand transfer of this domain name where, for the past five years, Complainant has provided Respondent with email encouragement, failed to object to Respondent's use, and accepted payments from the sale of Complainant's products through the website associated with this domain name.
Respondent contends that it did not register and is not using the <recarochildseats.com> domain name in bad faith. Respondent registered the domain after negotiations with Complainant had commenced and in anticipation of the Authorized Distribution Agreement. Respondent's offer to sell this domain name came only after Complainant demanded that Respondent transfer ownership of it – this demand was the first and only time Complainant demanded that Respondent cease use of the <recarochildseats.com> domain name. According to Respondent, these facts do not support the position that Respondent registered this domain name primarily for the purpose of selling it to Complainant. Instead, Respondent asserts that it registered this domain name for the good faith and authorized distribution of Complainant's products.
In sum, Respondent states that it has no continued interest in the <recarobabyseats.com> domain name and has never had an interest in the <recaronorthamerica.com> domain name. With regard to the domain name <recarochildseats.com>, Respondent indicates that it desires to remain a distributor of Complainant and has already presented various options to Complainant in an attempt to resolve the larger dispute between the parties.
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant has established that it has substantial rights in its RECARO trademarks based not only on its federal trademark registrations, but also on long-standing use and promotion in the United States and other countries. Regarding confusing similarity, each of the disputed domain names – <recarobabyseats.com>, <recarochildseats.com> and <recaronorthamerica.com> – incorporates Complainant's RECARO mark in its entirety, while adding, respectively, the descriptive terms “baby”, “child”, “seats”, and “North America”, all of which relate to Complainant's business. As such, these terms do not dispel confusing similarity, but in all likelihood heighten confusion. See American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 (use of “automotive” in the domain name along with the AAA mark “actually serves to increase the likelihood of confusion”). Because Complainant's RECARO mark and the distinctive part of the disputed domain names are identical, the domain names are confusingly similar to the RECARO mark.
The Panel finds that the disputed domain names are confusingly similar to Complainant's marks for purposes of paragraph 4(a)(i) of the Policy.
The Panel is persuaded from the record of this case that Respondent has no rights or legitimate interests in the following domain names: <recarobabyseats.com> and <recaronorthamerica.com>. Indeed, Respondent, despite being listed as registrant in the WhoIs contact details (with certain matching address details), denies that it has any ownership or other interest in respect to the <recaronorthamerica.com> domain name. Moreover, with regard to the <recarobabyseats.com> domain, Respondent asserts that it registered it simply as another domain name option and has no continued interest in it. Furthermore, the Respondent's only use of the <recarobabyseats.com> and <recaronorthamerica.com> domain names appears to be in connection with pay-per-click landing pages.
It is pertinent to note that both of these domain names were registered after Complainant and Respondent had entered into the Authorized Distributor Agreement, which, as noted above, provides that a “[d]istributor shall not use or register any Internet domain name containing any RECARO trademark, trade name, or brand”. This prohibition allowed Complainant to control the use of its marks specifically with respect to domain names, notwithstanding any license it may have granted to Respondent to use its marks to sell RECARO goods. See e.g., Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (“the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products”).
Regarding any rights or legitimate interests in the <recarochildseats.com> domain name, Complainant claims that Respondent has none. Complainant acknowledges that Respondent registered this domain name before conclusion of the Authorized Distributor Agreement between Complainant and Respondent. However, Complainant maintains that this domain name registration did not provide Respondent with any rights in the RECARO mark, and the improper use of the domain name and associated website was never authorized by Complainant via license or otherwise. Moreover, Complainant contends that registration of this domain name incorporating the RECARO mark, while the parties were discussing a potential relationship, is evidence of bad faith registration. In addition, Complainant urges that Respondent later attempted to sell the <recarochildseats.com> domain to Complainant for USD 1,500,000, an amount well in excess of out-of-pocket costs. Finally, Complainant urges that while Respondent has stated that it had written authorization to register and use this domain name, in response to Complainant's demands it has failed to provide documentation in support of this assertion.
Respondent, on the other hand, claims that it has both rights and legitimate interests in the <recarochildseats.com> domain name. As discussed above, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.3 states the majority view that “[a] reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements.” These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately disclosing the registrant's relationship with the trademark owner.” As summarized above, Respondent asserts that its use of the <recarochildseats.com> domain name fits within these requirements because (i) this domain name and the corresponding website were selected and created with the knowledge and authorization of Complainant; (ii) Respondent has used this domain name to sell Complainant's products; (iii) Respondent has clearly stated its relationship as an authorized distributor of Complainant on the website associated with the domain name; and (iv) both Complainant and other distributors own other domain names that include Complainant's mark, and thus Respondent has not attempted to corner the market with respect to domain names incorporating Complainant's marks. In addition, Respondent has directly denied Complainant's assertion that Respondent registered this domain name without implied or express authorization, claiming Complainant's allegation on this point is false and disingenuous.
In light of this review, there are conflicting factual assertions by the parties with respect to whether or not Respondent had any rights or legitimate interests in the <recarochildseats.com> domain name. In particular, there are conflicting allegations about whether Respondent received from Complainant any implied or express authorization to use the <recarochildseats.com> domain name. Both parties recognize that this domain name was registered shortly before Respondent signed the Authorized Distributor Agreement in 2004, which contained the express prohibition against registration of any domain names. If Complainant had wanted to object to Respondent's use of the <recarochildseats.com> domain, an objection shortly after the date of this Agreement, once Respondent had commenced use would have been timely. Respondent has emphasized, however, that Complainant cannot in hindsight change its position after five years of Respondent's use, in which Complainant provided Respondent with email encouragement, failed to object to Respondent's use, and accepted payments from the sale of Complainant's products through the website associated with this domain name. Respondent has submitted emails from a period in April 2005 indicating that Complainant did not object to the <recarochildseats.com> domain, but instead encouraged its use.
The Panel is of the view that during the approximate five years following Respondent's registration of the <recarochildseats.com> domain name in July 2004, Complainant has acquiesced and even encouraged Respondent's use of this domain. Thus, while there may be certain contract, trademark or other legal issues that are in dispute between the parties that could be addressed in a court, the Panel finds that Complainant has failed to prove, on the preponderance of the evidence, that Respondent has no rights or legitimate interests in respect of the <recarochildseats.com> domain name.
In view of the Panel's decision above concerning rights or legitimate interests in the disputed domain names – i.e., that Respondent has no rights or legitimate interests in the <recarobabyseats.com> and <recaronorthamerica.com> domain names, and that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the <recarochildseats.com> domain name1 –the only question that remains is whether the domain names <recarobabyseats.com> and <recaronorthamerica.com> were registered and used in bad faith.
The Panel finds that both of these domain names were registered while specifically targeting Complainant and its marks. In addition, the evidence indicates that Respondent registered the <recarobabyseats.com> and <recaronorthamerica.com> domain names in violation of the Authorized Distributor Agreement, which specifically prohibited the registration of any domain names incorporating Complainant's marks. In each instance of registration, Respondent sought to impermissibly use and exploit Complainant's mark by using the mark in an unofficially sanctioned website. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Steven R. Schaklette, WIPO Case No. D2001-1350. Both domain names, during certain periods, have been linked to parking websites containing pay-per-click advertising links, including links to goods competitive with Complainant's products. The use of a parking page with links to a competitor of a legitimate trademark holder is indicative of bad faith. The American Automobile Association, Inc. v. Rami Smair, WIPO Case No. D2009-0294. Finally, while Respondent denies that it had any connection to the <recaronorthamerica.com> domain name, it has failed to provide sufficient explanation for why the WhoIs contact details (i) identify Respondent as registrant, (ii) confirm that this domain name was registered by Tucows Inc., the same registrar for Respondent's <recarochildseats.com> domain name, and (iii) include contact details, some of which are identical to the contact details for the other domain names (i.e., the same address for the technical contact).
Accordingly, the Panel finds that Respondent registered and used the <recarobabyseats.com> and <recaronorthamerica.com> domain names in bad faith, in violation inter alia of paragraph 4(b)(iv) of the Policy, by attracting Internet users to websites for commercial gain by creating a likelihood of confusion with Complainant's RECARO marks.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that
(i) the disputed domain names <recarobabyseats.com> and <recaronorthamerica.com> be transferred to Complainant, and
(ii) the Complaint is denied with respect to the disputed domain name <recarochildseats.com>.
Christopher S. Gibson
Sole Panelist
Dated: June 1, 2010
1 Although not strictly necessary to the ultimate outcome of the case, in this Panel's view in light of the fact that the <recarochildseats.com> domain name was registered prior to the signing of the parties' Authorized Distributor Agreement, and in connection with a bona fide offering of goods, Complainant has failed to establish that the registration of this disputed domain name was in bad faith.